FINANCIAL DEVELOPMENT HOLDCO LLC
Financial services, namely, developing and providing financial indexes for tracking the performance of stock, stock funds, futures, options, annuities, and other securities
United States Patent and Trademark Office (USPTO)
Office Action Response
Outgoing Trademark Office Action
Trademark Office Action Response
TRADEMARK LAW OFFICE 115
Examining Attorney Janice L. McMorrow
Serial No. 77/081,843
Mark: NEXT GENERATION INDEXES
Applicant Financial Development HoldCo LLC (Applicant) hereby submits its
response to the U.S. Patent and Trademark Offices Office Action mailed on October 24, 2007,
with regard to the trademark application for NEXT GENERATION INDEXES (Serial No.
77/081,843).
REMARKS
The Examining Attorney has refused registration of Applicants NEXT
GENERATION INDEXES mark on the grounds that it resembles the mark in U.S.
Registration No. 3,254,442 (NEXT GENERATION) to the extent that makes confusion likely.
Trademark Act, Section 2(d), 15 U.S.C. § 1052(d), TMEP §§ 1207.01 et seq. Applicant
respectfully disagrees with this conclusion and requests that the Examining Attorney reconsider
her decision for the reasons that follow.
Applicants NEXT GENERATION INDEXES mark is not likely to be confused with
the registered mark. While the determination as to whether marks are likely to be confused is a
difficult one that involves the consideration of many factors, the Examining Attorney appears
to have denied Applicants application on the grounds that Applicants and the registered mark
are somewhat similar in appearance (in that they incorporate common terms), and on the
grounds that their respective services appear to be related. This Response addresses the factors
that make it clear that there is no likelihood of confusion between Applicants marks and the
registered mark.
I. APPLICANTS USE OF ITS NEXT GENERATION INDEXES MARK IS
UNLIKELY TO CAUSE CONFUSION
In the Office Action, registration was refused because it was said that Applicants
NEXT GENERATION INDEXES mark, when used in connection with financial services,
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Examining Attorney Janice L. McMorrow
Serial No. 77/081,843
Mark: NEXT GENERATION INDEXES
namely developing and providing financial indexes for tracking the performance of stock, stock
funds, futures, options, annuities, and other securities, so resembles the registered mark as to
be likely to cause confusion.
However, as the following discussion establishes, the registered mark should not pose a
barrier to the registration of Applicants NEXT GENERATION INDEXES mark. [I]n every
case turning on likelihood of confusion, it is the duty of the examiner . . . to find, upon
consideration of all the evidence, whether or not confusion appears likely. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563, 568 (C.C.P.A. 1973) (emphasis in
the original). Although there are similarities between the marks at issue, a full consideration of
the evidence, including (i) the apparent distinctions between the marks, (ii) the diluted nature of
the subject field given the coexistence of competing marks, (iii) the care exercised by
consumers of the services covered by the marks at issue, (iv) Applicants good faith, and (v) the
resolution of any doubt in Applicants favor, compels the conclusion that Applicants mark is
unlikely to cause any confusion. Accordingly, Applicant submits that Applicants NEXT
GENERATION INDEXES mark is entitled to registration on the Principal Register.
A. The Marks Are Not Identical and Have Readily Distinct Appearances and
Sounds.
As an initial matter, the NEXT GENERATION registered mark cited by the Examining
Attorney is not identical in terms of appearance or sound to Applicants NEXT GENERATION
INDEXES mark. Conversely, Applicants mark is substantially different in appearance from the
registered mark. Although the marks of Applicant and the registrant share the terms NEXT
GENERATION, Applicant respectively submits that it is erroneous to deem marks confusingly
similar merely because they share common elements. The anti-dissection rule, to which the
Trademark Board and most courts uniformly adhere, requires a finder of fact to view conflicting
marks in their entireties when determining whether such marks are confusingly similar to each
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Examining Attorney Janice L. McMorrow
Serial No. 77/081,843
Mark: NEXT GENERATION INDEXES
other. See, e.g., Recot, Inc. v. Becton, 214 F.3d 1322, 1329-30, 54 U.S.P.Q.2d 1894 (Fed. Cir.
2000) (reversing Board for improper dissection of conflicting marks to determine likelihood of
confusion); see also Massey Junior College, Inc. v. Fashion Inst. Of Tech., 492 F.2d 1399, 1402,
181 U.S.P.Q. 272, 273-74 (CCPA 1974). The fundamental issue is whether the marks create the
same overall impression when viewed as a whole. Sun-Fun Prods., Inc. v. Suntan Research &
Dev., Inc., 656 F.2d 186, 189, 213 U.S.P.Q. 91, 94 (5th Cir. 1981) (test is overall impression,
not a dissection of individual features). As set forth below, Applicant submits that its and the
registered mark do not create the same overall impression, and thus there is no likelihood of
confusion.
In particular, Applicants NEXT GENERATION INDEXES mark has a distinct visual
appearance than that of the cited NEXT GENERATION mark. Visually, the words in each
mark are dissimilar because while Applicants mark and the registered mark both contain the
phrase NEXT GENERATION, Applicants mark commands attention to its distinct term
INDEXES. This component in Applicants mark is equal in strength to the NEXT
GENERATION component. Therefore, the eye naturally views Applicants entire mark as an
integral whole, rather than being drawn specifically to the NEXT GENERATION component.
Indeed, when encountering Applicants and the registered mark, consumers and others will focus
on the entire marks, including the unique term found in Applicants mark, with that term thereby
distinguishing Applicants mark from the cited marks in their entirety.
The Trademark Office and the courts have found that the existence of distinct
components in otherwise similar marks may sufficiently distinguish the marks. See, e.g., Mr.
Hero Sandwich Systems, Inc. v. Roman Meal Co., 781 F.2d 884, 887-88, 228 U.S.P.Q. 364, 367
(Fed. Cir. 1986) (ROMAN and ROMANBURGER both for food products not confusingly
similar); Bell Laboratories, Inc. v. Colonial Products, Inc., 644 F. Supp. 542, 545-46, 231
U.S.P.Q. 569, 572 (S.D. Fla. 1986) (FINAL and FINAL FLIP both for rodenticide/pesticide
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Examining Attorney Janice L. McMorrow
Serial No. 77/081,843
Mark: NEXT GENERATION INDEXES
not confusingly similar); Lever Bros. Co. v. Barcolene Co., 463 F.2d 1107, 1109, 174 U.S.P.Q.
392, 393 (C.C.P.A. 1972) (ALL and ALL CLEAR both for household cleaners not
confusingly similar); Sears Mortg. Corp. v. Northeast Sav. F.A., 24 U.S.P.Q.2d 1227, 1229
(T.T.A.B. 1992) (the Trademark Trial and Appeal Board noting that, even if the marks before
them were used with identical services, the marks APPROVAL PLUS and
APPROVALFIRST do not closely resemble each other in appearance or pronunciation, or
meaning, and that there is no likelihood of confusion); Washington Natl Ins. Co. v. Blue Cross
& Blue Shield United, 727 F. Supp. 472, 474, 14 U.S.P.Q.2d 1307, 1309 (N.D. Ill. 1990) (no
confusing similarity between the marks ADVANTEDGE and THE ADVANTAGE
PROGRAM, both for use with managed health care programs); Gruner + Jahr USA
Publishing v. Meredith Corp., 991 F.2d 1072, 1078, 26 U.S.P.Q.2d 1583, 1588 (2d Cir. 1993)
(affirming the district court’s judgment denying injunctive relief against the mark PARENT’S
DIGEST, used in connection with a parenting magazine, in the face of plaintiffs PARENTS
mark, also used for a magazine); Conde Nast Publications, Inc. v. Miss Quality, Inc., 507 F.2d
1404, 1407, 184 U.S.P.Q. 422, 425 (C.C.P.A. 1975) (finding that the mark COUNTRY
VOGUES does not so resemble the mark VOGUE as to be likely to cause confusion; noting
that COUNTRY VOGUES and VOGUE do not look or sound alike, that the only similarity is
that each mark contains the word vogue, and that the dissimilarities between the marks,
viewed in their entireties, outweigh that similarity so as to leave no doubt).
Applicants NEXT GENERATION INDEXES mark also has a different and distinct
sound than that of the registered NEXT GENERATION mark. Courts have applied an
auditory characteristics test to determine whether one mark generates an auditory response that
calls to mind or may be confused with the sound of another mark. Chips N Twigs Inc. v. Chip-
Chip Ltd., 414 F. Supp. 1003, 1015, 190 U.S.P.Q. 361 (E.D.Pa.1976). In applying this test,
courts have focused on the number of syllables in both the common and distinctive portions of
the marks, and have found that a distinguishing multi-syllable portion is sufficient to set the
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Examining Attorney Janice L. McMorrow
Serial No. 77/081,843
Mark: NEXT GENERATION INDEXES
marks apart. See Schmid Labs. v. Youngs Drug Prods. Corp., 482 F. Supp. 14, 18, 206 U.S.P.Q.
468 (D.N.J. 1979) (distinguishing sound of the two-syllable prefix of SENSI-RIBBED
sufficiently distinguishes the mark from the one-syllable word RIBBED). Here, the phrase
NEXT GENERATION in the cited mark contains five syllables. In contrast, the phrase
NEXT GENERATION INDEXES in Applicants mark contains an additional strong and
distinct multi-syllable component. Just as in Schmid Labs., the addition of the multi-syllable
term INDEXES gives the overall mark a distinct sound, thus sufficiently distinguishing the
five-syllable phrase in the registered mark with the eight-syllable phrase in Applicants mark.
In the end, consideration must be given to the effect of the entire mark including any
term in addition to that which closely resembles the opposing mark. In re Cosvetic
Laboratories, Inc., 202 U.S.P.Q. 842, 845 (T.T.A.B. 1979) (quoting Rockwood Chocolate Co. v.
Hoffman Candy Co., 372 F.2d 552, 556, 152 U.S.P.Q. 599 (C.C.P.A. 1967)). The effect and
overall impression of the marks here lead to an absence of any likelihood of confusion between
Applicants NEXT GENERATION INDEXES mark and the registered mark.
B. The Existence of Numerous Coexisting Marks Indicates the Somewhat
Diluted Nature of the Field, Warranting Registration Here.
Where multiple parties are using similar marks or marks with similar components,
the entry of another mark into the already crowded field is less likely to cause confusion than
would be the situation otherwise. See, e.g., In re E. I. Du Pont de Nemours & Co., 476 F.2d at
1361, 177 U.S.P.Q. at 567 (the number and nature of similar marks in use on similar goods is a
factor to be considered in evaluating likelihood of confusion); Procter & Gamble Co. v.
Johnson & Johnson, Inc., 485 F. Supp 1185, 1196-97, 205 U.S.P.Q. 697, 707 (S.D.N.Y. 1979),
affd, 636 F.2d 1203 (2d Cir. 1980) (use of the mark SURE for deodorant is intrinsically weak
and entitled to only limited protection). Marks in such a field are entitled to relatively narrow
protection. 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §§
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Serial No. 77/081,843
Mark: NEXT GENERATION INDEXES
11:85 and 11:86 (4th ed. 2003). See also Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432
F.2d 1400, 1402, 167 U.S.P.Q. 529, 530 (C.C.P.A. 1970) (likelihood of confusion reduced
when the overlapping term is weak, including where it is in common use by other sellers);
Knapp-Monarch Co. v. Poloron Products, Inc., 134 U.S.P.Q. 412, 414 (T.T.A.B. 1962) (no
likelihood of confusion between THERMEX and THERM-A-JUG, including given the
suggestiveness of the overlapping, common term Therm); Washington Natl Ins. Co. v. Blue
Cross & Blue Shield United, 727 F. Supp. 472, 474, 14 U.S.P.Q.2d 1307, 1311 (N.D. Ill. 1990)
(the term Advantage held to be weak because of other third-party use in the field); In re
Hamilton Bank, 222 U.S.P.Q. 174, 178 (T.T.A.B. 1984) (finding that a commonly used term
does not provide a basis for a likelihood of confusion finding).
Here, the Trademark Office already has issued registrations for numerous marks
covering financial services that contain the phrase NEXT GENERATION, based on the
distinction of additional terms. Examples of such marks include, but are not limited to, the
following: THE NEXT GENERATION OF ETFS (U.S. Registration No. 3261193), NEXT
GENERATION RETIREMENT PROGRAM (U.S. Registration No. 3019732), THE NEXT
RE GENERATION (U.S. Registration No. 2794570), NEXT GENERATION PARTNERS
(U.S. Registration No. 2715773), NEXT-GENERATION IRA (U.S. Registration No.
2872044), and NEXTGEN COLLEGE INVESTING PLAN (U.S. Registration No.
2476425). Coverage by these marks includes such financial services as investment advisory
services, financial analysis and consultation services, and investment management services, all
of which are related to the services provided under registrants mark. See the registration print-
outs attached hereto as Exhibit A.
Given this coexistence, the trademark field already is somewhat diluted and customers
will not likely be confused between any two of the crowd and may have learned to carefully
pick out one from the other. 2 McCarthy, § 11:85 at 11-163. See also Miss World (UK) Ltd.
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Mark: NEXT GENERATION INDEXES
v. Mrs. America Pageants, Inc., 856 F.2d 1445, 1449-50, 8 U.S.P.Q.2d 1237, 1241 (9th Cir.
1988) (quoting McCarthy, supra, with approval).
In addition, most of these marks were registered prior to the registration of the cited
mark, yet the Trademark Office allowed the cited mark in spite of the existence of the other
marks. The fact that the Trademark Office has registered these marks over each other further
diminishes their effectiveness as a potential bar to the registration of Applicant’s mark, and
establishes the Trademark Offices own recognition that any distinction between the marks,
such as the additional terms added to the phrase NEXT GENERATION, suffices to
distinguish the marks and establish their right–including that of Applicants mark–to
registration. See also In re Tia Maria, Inc., 188 U.S.P.Q. 524, 526 (T.T.A.B. 1975); Smithkline
Beckman Corp. v. Proctor & Gamble Co., 591 F. Supp. 1229, 1237, 223 U.S.P.Q. 1230, 1235
(N.D.N.Y. 1984), affd without op., 755 F.2d 914 (2d Cir. 1985) (no confusion where
consumers who are faced with similar marks (ECOTRIN, EXCEDRIN and EMPIRIN) are
able to distinguish between them and further will be able to distinguish defendants mark
ENCAPRIN, which is no more confusing than the existing marks).
Thus, the fact that Applicants and the registrants marks share this NEXT
GENERATION component should not bar registration of Applicants mark.
C. The Care Exercised by Purchasers Makes Confusion Unlikely.
Purchaser care and sophistication similarly inform whether confusion between marks is
likely. A consumer who exercises scrutiny in selecting a product is likely to pay close attention
to the distinguishing features and trademarks of the product, and is not likely to confuse them
with the products of another manufacturer. See, e.g., In re E. I. du Pont de Nemours & Co.,
476 F.2d at 1361, 177 U.S.P.Q. at 567 (whether buyers are likely to buy a product on impulse
or after careful deliberation is an important factor in evaluating likelihood of confusion);
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Information Clearing House, Inc. v. Find Magazine, 492 F. Supp. 147, 162-63, 209 U.S.P.Q.
936, 949-50 (S.D.N.Y. 1980).
Here, Applicants financial services are designed to meet the needs of a full range of
investors, including sophisticated investors such as institutional investors and investors of high
net worth. See the description of Applicants services, attached hereto as Exhibit B. An
institutional investor is an investor, such as a bank, insurance company, retirement fund,
hedge fund, or mutual fund, that is financially sophisticated and makes large investments,
often held in very large portfolios of investments. (emphasis added). See the Internet
definition available at http://en.wikipedia.org/wiki/Institutional_investor, a copy of which is
attached hereto as Exhibit C. A high-net-worth individual is a person with a high net worth,
who is typically defined as having investable assets in excess of $1,000,000. See the Internet
definition available at http://en.wikipedia.org/wiki/High_net_worth_individual, a copy of
which is attached hereto as Exhibit D. The size of investments with which these consumers
seek financial services is significant, and supports Applicants assertion that consumers using
its services are sophisticated, and will not be likely to use Applicants services on impulse.
Instead, the consumers are sophisticated and certainly will know with whom they are dealing.
Given the specialized nature of financial services and their consumers, there is little
likelihood of confusion between the marks at issue. Cf. Fawick Flexi-Grip Co. v. Hungerford
Plastics Corp., 111 U.S.P.Q. 140, 141 (Commr Pat. & Trademarks 1956) (confusion unlikely
where customers know what they want, where to buy it, and with whom they are dealing);
Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100, 1111,
18 U.S.P.Q.2d 1587, 1595-96 (6th Cir. 1991) (lesser likelihood of confusion with expensive
purchases or sophisticated buyers).
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D. Applicant Has No Intent to Trade on Any Good Will Associated with the
Registrants, or Any Other Partys, Mark.
The absence of any evidence of an applicants intent to trade on the good will of a
registrants mark further counsels against a finding that confusion is likely. Cf. 3 McCarthy,
§ 23:110 at 23-210. Applicant selected its NEXT GENERATION INDEXES mark in the
utmost of good faith, without any intent to cause confusion. That good faith and lack of intent
to confuse the public is an additional factor to consider here and further militates in favor of the
lack of any likelihood of confusion and in favor of registration. See Family Circle, Inc. v.
Family Circle Associates, Inc., 332 F.2d 534, 540, 141 U.S.P.Q. 848 (3rd Cir. 1964).
E. Any Doubt Should Inure to the Benefit of Applicant.
Finally, any doubt as to whether confusion is likely should be resolved in Applicants
favor. See, e.g., In re Bliss & Laughlin Industries, Inc., 198 U.S.P.Q. 127, 128 (T.T.A.B.
1978); In re American Hospital Supply Corp., 219 U.S.P.Q. 949, 951 (T.T.A.B. 1983); In re
Geo. A. Hormel & Co., 218 U.S.P.Q. 286, 287 (T.T.A.B. 1983); In re Shutts, 217 U.S.P.Q. 363,
365 (T.T.A.B. 1983). Any person who believes that he or she would be damaged by the
registration of Applicants mark will have an opportunity to oppose the registration through an
opposition or cancellation proceeding in the future.
II. CONCLUSION
In light of the above discussion, there is no likelihood that any confusion will result
from the registration of Applicants NEXT GENERATION INDEXES mark. Moreover, the
objections and issues raised in the Examining Attorneys Office Action otherwise have been
addressed. Thus, Applicant respectfully asks for the prompt passage of its trademark
application to publication.
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Mark: NEXT GENERATION INDEXES
However, should there be any question or other matter which can be handled by an
Examining Attorneys Interview or Amendment, Applicant respectfully requests that the
Examining Attorney contact the undersigned directly.
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TRADEMARK LAW OFFICE 115
Examining Attorney Janice L. McMorrow
Serial No. 77/081,843
Mark: NEXT GENERATION INDEXES
Applicant Financial Development HoldCo LLC (Applicant) hereby submits its
response to the U.S. Patent and Trademark Offices Office Action mailed on October 24, 2007,
with regard to the trademark application for NEXT GENERATION INDEXES (Serial No.
77/081,843).
REMARKS
The Examining Attorney has refused registration of Applicants NEXT
GENERATION INDEXES mark on the grounds that it resembles the mark in U.S.
Registration No. 3,254,442 (NEXT GENERATION) to the extent that makes confusion likely.
Trademark Act, Section 2(d), 15 U.S.C. § 1052(d), TMEP §§ 1207.01 et seq. Applicant
respectfully disagrees with this conclusion and requests that the Examining Attorney reconsider
her decision for the reasons that follow.
Applicants NEXT GENERATION INDEXES mark is not likely to be confused with
the registered mark. While the determination as to whether marks are likely to be confused is a
difficult one that involves the consideration of many factors, the Examining Attorney appears
to have denied Applicants application on the grounds that Applicants and the registered mark
are somewhat similar in appearance (in that they incorporate common terms), and on the
grounds that their respective services appear to be related. This Response addresses the factors
that make it clear that there is no likelihood of confusion between Applicants marks and the
registered mark.
I. APPLICANTS USE OF ITS NEXT GENERATION INDEXES MARK IS
UNLIKELY TO CAUSE CONFUSION
In the Office Action, registration was refused because it was said that Applicants
NEXT GENERATION INDEXES mark, when used in connection with financial services,
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Serial No. 77/081,843
Mark: NEXT GENERATION INDEXES
namely developing and providing financial indexes for tracking the performance of stock, stock
funds, futures, options, annuities, and other securities, so resembles the registered mark as to
be likely to cause confusion.
However, as the following discussion establishes, the registered mark should not pose a
barrier to the registration of Applicants NEXT GENERATION INDEXES mark. [I]n every
case turning on likelihood of confusion, it is the duty of the examiner . . . to find, upon
consideration of all the evidence, whether or not confusion appears likely. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563, 568 (C.C.P.A. 1973) (emphasis in
the original). Although there are similarities between the marks at issue, a full consideration of
the evidence, including (i) the apparent distinctions between the marks, (ii) the diluted nature of
the subject field given the coexistence of competing marks, (iii) the care exercised by
consumers of the services covered by the marks at issue, (iv) Applicants good faith, and (v) the
resolution of any doubt in Applicants favor, compels the conclusion that Applicants mark is
unlikely to cause any confusion. Accordingly, Applicant submits that Applicants NEXT
GENERATION INDEXES mark is entitled to registration on the Principal Register.
A. The Marks Are Not Identical and Have Readily Distinct Appearances and
Sounds.
As an initial matter, the NEXT GENERATION registered mark cited by the Examining
Attorney is not identical in terms of appearance or sound to Applicants NEXT GENERATION
INDEXES mark. Conversely, Applicants mark is substantially different in appearance from the
registered mark. Although the marks of Applicant and the registrant share the terms NEXT
GENERATION, Applicant respectively submits that it is erroneous to deem marks confusingly
similar merely because they share common elements. The anti-dissection rule, to which the
Trademark Board and most courts uniformly adhere, requires a finder of fact to view conflicting
marks in their entireties when determining whether such marks are confusingly similar to each
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Mark: NEXT GENERATION INDEXES
other. See, e.g., Recot, Inc. v. Becton, 214 F.3d 1322, 1329-30, 54 U.S.P.Q.2d 1894 (Fed. Cir.
2000) (reversing Board for improper dissection of conflicting marks to determine likelihood of
confusion); see also Massey Junior College, Inc. v. Fashion Inst. Of Tech., 492 F.2d 1399, 1402,
181 U.S.P.Q. 272, 273-74 (CCPA 1974). The fundamental issue is whether the marks create the
same overall impression when viewed as a whole. Sun-Fun Prods., Inc. v. Suntan Research &
Dev., Inc., 656 F.2d 186, 189, 213 U.S.P.Q. 91, 94 (5th Cir. 1981) (test is overall impression,
not a dissection of individual features). As set forth below, Applicant submits that its and the
registered mark do not create the same overall impression, and thus there is no likelihood of
confusion.
In particular, Applicants NEXT GENERATION INDEXES mark has a distinct visual
appearance than that of the cited NEXT GENERATION mark. Visually, the words in each
mark are dissimilar because while Applicants mark and the registered mark both contain the
phrase NEXT GENERATION, Applicants mark commands attention to its distinct term
INDEXES. This component in Applicants mark is equal in strength to the NEXT
GENERATION component. Therefore, the eye naturally views Applicants entire mark as an
integral whole, rather than being drawn specifically to the NEXT GENERATION component.
Indeed, when encountering Applicants and the registered mark, consumers and others will focus
on the entire marks, including the unique term found in Applicants mark, with that term thereby
distinguishing Applicants mark from the cited marks in their entirety.
The Trademark Office and the courts have found that the existence of distinct
components in otherwise similar marks may sufficiently distinguish the marks. See, e.g., Mr.
Hero Sandwich Systems, Inc. v. Roman Meal Co., 781 F.2d 884, 887-88, 228 U.S.P.Q. 364, 367
(Fed. Cir. 1986) (ROMAN and ROMANBURGER both for food products not confusingly
similar); Bell Laboratories, Inc. v. Colonial Products, Inc., 644 F. Supp. 542, 545-46, 231
U.S.P.Q. 569, 572 (S.D. Fla. 1986) (FINAL and FINAL FLIP both for rodenticide/pesticide
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not confusingly similar); Lever Bros. Co. v. Barcolene Co., 463 F.2d 1107, 1109, 174 U.S.P.Q.
392, 393 (C.C.P.A. 1972) (ALL and ALL CLEAR both for household cleaners not
confusingly similar); Sears Mortg. Corp. v. Northeast Sav. F.A., 24 U.S.P.Q.2d 1227, 1229
(T.T.A.B. 1992) (the Trademark Trial and Appeal Board noting that, even if the marks before
them were used with identical services, the marks APPROVAL PLUS and
APPROVALFIRST do not closely resemble each other in appearance or pronunciation, or
meaning, and that there is no likelihood of confusion); Washington Natl Ins. Co. v. Blue Cross
& Blue Shield United, 727 F. Supp. 472, 474, 14 U.S.P.Q.2d 1307, 1309 (N.D. Ill. 1990) (no
confusing similarity between the marks ADVANTEDGE and THE ADVANTAGE
PROGRAM, both for use with managed health care programs); Gruner + Jahr USA
Publishing v. Meredith Corp., 991 F.2d 1072, 1078, 26 U.S.P.Q.2d 1583, 1588 (2d Cir. 1993)
(affirming the district court’s judgment denying injunctive relief against the mark PARENT’S
DIGEST, used in connection with a parenting magazine, in the face of plaintiffs PARENTS
mark, also used for a magazine); Conde Nast Publications, Inc. v. Miss Quality, Inc., 507 F.2d
1404, 1407, 184 U.S.P.Q. 422, 425 (C.C.P.A. 1975) (finding that the mark COUNTRY
VOGUES does not so resemble the mark VOGUE as to be likely to cause confusion; noting
that COUNTRY VOGUES and VOGUE do not look or sound alike, that the only similarity is
that each mark contains the word vogue, and that the dissimilarities between the marks,
viewed in their entireties, outweigh that similarity so as to leave no doubt).
Applicants NEXT GENERATION INDEXES mark also has a different and distinct
sound than that of the registered NEXT GENERATION mark. Courts have applied an
auditory characteristics test to determine whether one mark generates an auditory response that
calls to mind or may be confused with the sound of another mark. Chips N Twigs Inc. v. Chip-
Chip Ltd., 414 F. Supp. 1003, 1015, 190 U.S.P.Q. 361 (E.D.Pa.1976). In applying this test,
courts have focused on the number of syllables in both the common and distinctive portions of
the marks, and have found that a distinguishing multi-syllable portion is sufficient to set the
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marks apart. See Schmid Labs. v. Youngs Drug Prods. Corp., 482 F. Supp. 14, 18, 206 U.S.P.Q.
468 (D.N.J. 1979) (distinguishing sound of the two-syllable prefix of SENSI-RIBBED
sufficiently distinguishes the mark from the one-syllable word RIBBED). Here, the phrase
NEXT GENERATION in the cited mark contains five syllables. In contrast, the phrase
NEXT GENERATION INDEXES in Applicants mark contains an additional strong and
distinct multi-syllable component. Just as in Schmid Labs., the addition of the multi-syllable
term INDEXES gives the overall mark a distinct sound, thus sufficiently distinguishing the
five-syllable phrase in the registered mark with the eight-syllable phrase in Applicants mark.
In the end, consideration must be given to the effect of the entire mark including any
term in addition to that which closely resembles the opposing mark. In re Cosvetic
Laboratories, Inc., 202 U.S.P.Q. 842, 845 (T.T.A.B. 1979) (quoting Rockwood Chocolate Co. v.
Hoffman Candy Co., 372 F.2d 552, 556, 152 U.S.P.Q. 599 (C.C.P.A. 1967)). The effect and
overall impression of the marks here lead to an absence of any likelihood of confusion between
Applicants NEXT GENERATION INDEXES mark and the registered mark.
B. The Existence of Numerous Coexisting Marks Indicates the Somewhat
Diluted Nature of the Field, Warranting Registration Here.
Where multiple parties are using similar marks or marks with similar components,
the entry of another mark into the already crowded field is less likely to cause confusion than
would be the situation otherwise. See, e.g., In re E. I. Du Pont de Nemours & Co., 476 F.2d at
1361, 177 U.S.P.Q. at 567 (the number and nature of similar marks in use on similar goods is a
factor to be considered in evaluating likelihood of confusion); Procter & Gamble Co. v.
Johnson & Johnson, Inc., 485 F. Supp 1185, 1196-97, 205 U.S.P.Q. 697, 707 (S.D.N.Y. 1979),
affd, 636 F.2d 1203 (2d Cir. 1980) (use of the mark SURE for deodorant is intrinsically weak
and entitled to only limited protection). Marks in such a field are entitled to relatively narrow
protection. 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §§
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11:85 and 11:86 (4th ed. 2003). See also Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432
F.2d 1400, 1402, 167 U.S.P.Q. 529, 530 (C.C.P.A. 1970) (likelihood of confusion reduced
when the overlapping term is weak, including where it is in common use by other sellers);
Knapp-Monarch Co. v. Poloron Products, Inc., 134 U.S.P.Q. 412, 414 (T.T.A.B. 1962) (no
likelihood of confusion between THERMEX and THERM-A-JUG, including given the
suggestiveness of the overlapping, common term Therm); Washington Natl Ins. Co. v. Blue
Cross & Blue Shield United, 727 F. Supp. 472, 474, 14 U.S.P.Q.2d 1307, 1311 (N.D. Ill. 1990)
(the term Advantage held to be weak because of other third-party use in the field); In re
Hamilton Bank, 222 U.S.P.Q. 174, 178 (T.T.A.B. 1984) (finding that a commonly used term
does not provide a basis for a likelihood of confusion finding).
Here, the Trademark Office already has issued registrations for numerous marks
covering financial services that contain the phrase NEXT GENERATION, based on the
distinction of additional terms. Examples of such marks include, but are not limited to, the
following: THE NEXT GENERATION OF ETFS (U.S. Registration No. 3261193), NEXT
GENERATION RETIREMENT PROGRAM (U.S. Registration No. 3019732), THE NEXT
RE GENERATION (U.S. Registration No. 2794570), NEXT GENERATION PARTNERS
(U.S. Registration No. 2715773), NEXT-GENERATION IRA (U.S. Registration No.
2872044), and NEXTGEN COLLEGE INVESTING PLAN (U.S. Registration No.
2476425). Coverage by these marks includes such financial services as investment advisory
services, financial analysis and consultation services, and investment management services, all
of which are related to the services provided under registrants mark. See the registration print-
outs attached hereto as Exhibit A.
Given this coexistence, the trademark field already is somewhat diluted and customers
will not likely be confused between any two of the crowd and may have learned to carefully
pick out one from the other. 2 McCarthy, § 11:85 at 11-163. See also Miss World (UK) Ltd.
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v. Mrs. America Pageants, Inc., 856 F.2d 1445, 1449-50, 8 U.S.P.Q.2d 1237, 1241 (9th Cir.
1988) (quoting McCarthy, supra, with approval).
In addition, most of these marks were registered prior to the registration of the cited
mark, yet the Trademark Office allowed the cited mark in spite of the existence of the other
marks. The fact that the Trademark Office has registered these marks over each other further
diminishes their effectiveness as a potential bar to the registration of Applicant’s mark, and
establishes the Trademark Offices own recognition that any distinction between the marks,
such as the additional terms added to the phrase NEXT GENERATION, suffices to
distinguish the marks and establish their right–including that of Applicants mark–to
registration. See also In re Tia Maria, Inc., 188 U.S.P.Q. 524, 526 (T.T.A.B. 1975); Smithkline
Beckman Corp. v. Proctor & Gamble Co., 591 F. Supp. 1229, 1237, 223 U.S.P.Q. 1230, 1235
(N.D.N.Y. 1984), affd without op., 755 F.2d 914 (2d Cir. 1985) (no confusion where
consumers who are faced with similar marks (ECOTRIN, EXCEDRIN and EMPIRIN) are
able to distinguish between them and further will be able to distinguish defendants mark
ENCAPRIN, which is no more confusing than the existing marks).
Thus, the fact that Applicants and the registrants marks share this NEXT
GENERATION component should not bar registration of Applicants mark.
C. The Care Exercised by Purchasers Makes Confusion Unlikely.
Purchaser care and sophistication similarly inform whether confusion between marks is
likely. A consumer who exercises scrutiny in selecting a product is likely to pay close attention
to the distinguishing features and trademarks of the product, and is not likely to confuse them
with the products of another manufacturer. See, e.g., In re E. I. du Pont de Nemours & Co.,
476 F.2d at 1361, 177 U.S.P.Q. at 567 (whether buyers are likely to buy a product on impulse
or after careful deliberation is an important factor in evaluating likelihood of confusion);
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Information Clearing House, Inc. v. Find Magazine, 492 F. Supp. 147, 162-63, 209 U.S.P.Q.
936, 949-50 (S.D.N.Y. 1980).
Here, Applicants financial services are designed to meet the needs of a full range of
investors, including sophisticated investors such as institutional investors and investors of high
net worth. See the description of Applicants services, attached hereto as Exhibit B. An
institutional investor is an investor, such as a bank, insurance company, retirement fund,
hedge fund, or mutual fund, that is financially sophisticated and makes large investments,
often held in very large portfolios of investments. (emphasis added). See the Internet
definition available at http://en.wikipedia.org/wiki/Institutional_investor, a copy of which is
attached hereto as Exhibit C. A high-net-worth individual is a person with a high net worth,
who is typically defined as having investable assets in excess of $1,000,000. See the Internet
definition available at http://en.wikipedia.org/wiki/High_net_worth_individual, a copy of
which is attached hereto as Exhibit D. The size of investments with which these consumers
seek financial services is significant, and supports Applicants assertion that consumers using
its services are sophisticated, and will not be likely to use Applicants services on impulse.
Instead, the consumers are sophisticated and certainly will know with whom they are dealing.
Given the specialized nature of financial services and their consumers, there is little
likelihood of confusion between the marks at issue. Cf. Fawick Flexi-Grip Co. v. Hungerford
Plastics Corp., 111 U.S.P.Q. 140, 141 (Commr Pat. & Trademarks 1956) (confusion unlikely
where customers know what they want, where to buy it, and with whom they are dealing);
Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100, 1111,
18 U.S.P.Q.2d 1587, 1595-96 (6th Cir. 1991) (lesser likelihood of confusion with expensive
purchases or sophisticated buyers).
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D. Applicant Has No Intent to Trade on Any Good Will Associated with the
Registrants, or Any Other Partys, Mark.
The absence of any evidence of an applicants intent to trade on the good will of a
registrants mark further counsels against a finding that confusion is likely. Cf. 3 McCarthy,
§ 23:110 at 23-210. Applicant selected its NEXT GENERATION INDEXES mark in the
utmost of good faith, without any intent to cause confusion. That good faith and lack of intent
to confuse the public is an additional factor to consider here and further militates in favor of the
lack of any likelihood of confusion and in favor of registration. See Family Circle, Inc. v.
Family Circle Associates, Inc., 332 F.2d 534, 540, 141 U.S.P.Q. 848 (3rd Cir. 1964).
E. Any Doubt Should Inure to the Benefit of Applicant.
Finally, any doubt as to whether confusion is likely should be resolved in Applicants
favor. See, e.g., In re Bliss & Laughlin Industries, Inc., 198 U.S.P.Q. 127, 128 (T.T.A.B.
1978); In re American Hospital Supply Corp., 219 U.S.P.Q. 949, 951 (T.T.A.B. 1983); In re
Geo. A. Hormel & Co., 218 U.S.P.Q. 286, 287 (T.T.A.B. 1983); In re Shutts, 217 U.S.P.Q. 363,
365 (T.T.A.B. 1983). Any person who believes that he or she would be damaged by the
registration of Applicants mark will have an opportunity to oppose the registration through an
opposition or cancellation proceeding in the future.
II. CONCLUSION
In light of the above discussion, there is no likelihood that any confusion will result
from the registration of Applicants NEXT GENERATION INDEXES mark. Moreover, the
objections and issues raised in the Examining Attorneys Office Action otherwise have been
addressed. Thus, Applicant respectfully asks for the prompt passage of its trademark
application to publication.
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However, should there be any question or other matter which can be handled by an
Examining Attorneys Interview or Amendment, Applicant respectfully requests that the
Examining Attorney contact the undersigned directly.
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